Appeal 2006-3193
Application 10/772,595
interpretation of the language “providing an electroplating bath comprising .
. . at least two ionic alloy metals” (claims 1, 9 and 18) as encompassing an
electroplating bath containing boric acid and a zinc contaminant.
Based on this claim construction, we further concur with the
Examiner’s determination that both JP ‘693 and Passal inherently disclose
quaternary Ni-Co alloys for the reasons well-stated in the Answer. Notably,
Passal discloses an example in which the electroplating bath includes Ni, Co,
boric acid, and zinc sulfate (Answer 17-18, discussing Passal Example 8).
Appellants’ own Specification indicates that boric acid may provide minor
amounts of platable boron (Finding of Fact 3) and specifically teaches that
zinc sulfate is a suitable source of ionic metal alloy (Finding of Fact 2).
Therefore, the burden was properly shifted to Appellants to establish
that the prior art methods do not necessarily provide electroplating of a
quaternary alloy comprising nickel and cobalt. See In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (Where patentability rests
upon a property of the claimed material not disclosed within the art, the PTO
has no reasonable method of determining whether there is, in fact, a
patentable difference between the prior art materials and the claimed
material. Therefore, where the claimed and prior art products are identical
or substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the prior
art products do not necessarily possess the characteristics of the claimed
product.) Appellants have not provided sufficient arguments or evidence to
meet this burden.
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